New Changes to U.S. Patents: Significant Adjustments to Terminal Disclaimer

On May 10, 2024, a piece of news from the United States Patent and Trademark Office (USPTO) has drawn widespread attention from the industry. It plans to introduce a new regulation on terminal disclaimer, aiming to better address the issue of double - patenting and promote innovation and competition.

In the United States, sometimes inventors, patent owners or research teams may file multiple patent applications due to only minor differences between patent claims. However, this situation is often rejected by the USPTO as “obviousness - type double - patenting”. To deal with this problem, applicants usually file a terminal disclaimer in the relevant patents to ensure that there will be no confusion in the expiration of patent rights and their enforceability.

However, the new regulation will bring a significant change. According to the proposed new regulation, if a patent with a terminal disclaimer is associated with a patent that is determined to be invalid by the USPTO or a court, then this patent will also lose its enforceability. This measure is intended to reduce the cost of separately challenging the validity of multiple patents for the same invention, simplify and expedite the resolution of patent disputes, and provide greater certainty for competitors and the public.

USPTO Director Kathi Vidal said, “Our goal is to promote U.S. innovation and global competitiveness. This proposed regulation is part of our efforts to strengthen the intellectual property system, improve efficiency and reduce costs. We look forward to protecting innovation investments while promoting competition through appropriate changes.”

This new regulation is undoubtedly an important signal for U.S. patent applicants. In the future, when filing patent applications, especially when considering whether to file a continuation application or a terminal disclaimer, applicants need to consider their strategies more carefully.

Currently, this proposed regulation is in the public - comment - solicitation stage, and the public can submit comments through the federal e - rulemaking website before July 9. If you have any opinions or suggestions on this regulation, you are welcome to actively participate and contribute to the U.S. patent system.